EXHIBIT 10.15
EXCLUSIVE LICENSE AND REFERRAL AGREEMENT
THIS LICENSE AND REFERRAL AGREEMENT ("Agreement") is made and effective as
of December 1, 2007 (the "Effective Date") by and between Nevr-Dull, Inc., a New
York corporation with an address of 00 Xxxxx Xxxxxx, Xxxxxxxx, XX 00000
("Licensor"), and Organic Sales and Marketing, Inc., a Delaware corporation with
an address of 000 Xxxxxxxx, Xxxxxxx, Xxxxxxxxxxxxx 00000 ('Licensee").
WHEREAS, Licensor is the licensee of its affiliated company, The Xxxxxx
Xxxxx Company, Inc., the owner of the 'NEVR-DULL' trademark, name, label design,
and corporate and brand identification, as set forth on Exhibit A attached
hereto (the "Licensed Marks") and Licensor has the right to sublicense the
Licensed Marks;
WHEREAS, Licensor and Licensee wish to enter into this Agreement to grant
to Licensee the non-exclusive, right to manufacture, market, distribute and sell
products under the Licensed Marks for use on or in connection with organic based
cleaning products where Licensor has registered or applied to register its
NEVR-DULL trademark (the "Licensed Territory");
NOW THEREFORE, in consideration of the mutual promises set forth below and
other good and valuable consideration, the receipt and sufficiency of which are
hereby acknowledged, the parties agree as follows:
1. License
1.1 License. Subject to the terms and conditions of this Agreement, Licensor
hereby grants to Licensee a non-transferable, non-exclusive, license to
manufacture, distribute, market and sell products under the Licensed Marks
in the Licensed Territory for the term of this Agreement as set forth
herein. Licensor agrees that it will not manufacture, have manufactured,
distributed, marketed and/or sold, or grant any other license, to
manufacture, have manufactured, distribute, market and/or sell, products
under the Licensed Marks in the Licensed Territory during the term hereof
without Licensor's written consent. Except as expressly granted in this
Agreement, all right, title, and interest in and to the Licensed Marks,
and any modifications thereto or derivatives thereof, remain with
Licensor.
1.2 Restrictions. Except as expressly provided in this Agreement, Licensee
shall not: (a) transfer, sell, license, sublicense, distribute or
commercially exploit the Licensed Marks or (b) modify, reproduce, create
derivative or collective works from, or in any way otherwise exploit the
Licensed Marks in whole or in part without Licensor's written consent.
1.3 Licensor's Retained Right to Market and Sell. Licensor reserves the right,
without obligation or liability to Licensee for payment of compensation or
otherwise, to market any and all products under the Licensed Marks outside
of the Licensed Territory, either directly through its own employees to
any persons or entities or through other licensees and/or manufacturers.
1.4 Licensee Marketing Efforts. Licensee shall use all commercially reasonable
efforts to develop, manufacture, distribute, market and sell products
under the Licensed Marks in the Licensed Territory throughout the term of
this Agreement.
Exclusive License and Referral Agreement - Page 2
1.5 Licensor Assistance. Upon the Effective Date, Licensor shall provide
Licensee with a list of all of Licensor's customers and potential
customers within the Licensed Territory. During the term of the Agreement,
Licensor shall provide Licensee with any new customers in the Licensed
Territory.
1.6 Licensee's Use of the Licensed Marks. Licensee shall use the Licensed
Marks on any products in the Licensed Territory only in accordance with
the requirements of all applicable laws and regulations and in the manner
and form reasonably required by Licensor and shall conform to and observe
such reasonable requirements as Licensor shall from time to time approve
and Licensee accepts, including, without limitation, standards relative to
the size, design, position, appearance, marking, color and the Manner,
disposition and use of the Licensed Marks on any products in the Licensed
Territory. Licensor shall not use the Licensed Marks in any manner an on
any products in the Licensed Territory without first obtaining Licensor's
approval.
2. Fees and Reporting
2.1 Fees. Subject to the terms of this Agreement, Licensee shall pay to
Licensor license fees equal to $0.25 per bottle or unit of products sold
under the Licensed Marks in the Licensed Territory (the "Fees"). Fees
shall be paid in cash and will become due and payable in the month
following the month in which Licensee collects the revenues on which such
Fees accrue. In addition, Licensee will grant to Licensor a stock option
agreement, the terms of which shall form an amendment to this Agreement
and which provides that for every $250,000 of products sold under the
Licensed Marks by Licensee, Licensor shall be entitled to a stock option
of 15,000 shares of Licensee.
2.2 Reporting. Licensee will provide Licensor with a monthly report on or
before the thirtieth (30`i') day after the end of each previous month
setting forth in detail the sales of products under the Licensed Marks
during such month, including customer names, volume and sales prices by
product number, and all other information necessary for Licensor to
calculate the Fees that have accrued for such month, accompanied by
payment in full of all such Fees. In addition, Licensee shall provide
Licensor on a weekly basis a copy of all invoices relating to the sales of
products bearing the Licensed Marks.
2.3 Audit Rights. Licensor or Licensor's designated agent shall have the
right, upon reasonable prior notice, to audit Licensee's books and records
at Licensee's principal place of business during normal working hours to
verify Licensee's compliance with the provisions of this Agreement.
3. Term and Termination
3.1 Initial Term. This Agreement shall commence on the Effective Date and
continue for an initial term of one (1) year, unless otherwise terminated
in accordance with this Agreement (the "Term"). Thereafter, this Agreement
shall be automatically renewed for additional one (1) year periods, unless
either party terminates this Agreement, with or without cause, by giving
at least (90) days written notice prior to the end of each (1) year period
of its intent to terminate, or pursuant to the provisions of paragraph 3
herein.
3.2 Voluntary Termination by Licensee. Licensee shall have the right to
terminate this Agreement, for any reason, upon (a) at least ninety (90)
days prior written notice to Licensor, such notice to state the date at
least ninety (90) days in the future upon which termination is to be
effective and (b) payment of all amounts and Fees due to Licensor through
such termination effective date.
3.3 Termination for Breach. Either party shall have the right to terminate
this Agreement in
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the event that the other party has materially breached this Agreement;
provided, however, that no such termination will be effective unless (i)
the terminating party provides written notice to the other party setting
forth the facts and circumstances constituting the breach, and (ii) the
party alleged to be in breach does not cure such breach within fifteen
(15) business days following receipt of such notice. If a breach, other
than a breach for failure to make any payment of Fees due, is curable, but
such cure cannot be reasonably made within fifteen (15) business days
following receipt of such notice, the terminating party will not be
entitled to terminate the Agreement, if the party allegedly in breach,
within such fifteen (15) day period, presents a schedule to cure the
breach, commences curing such breach and thereafter diligently executes
the same to completion in accordance with the schedule.
3.4 Post Termination Obligations.
(a) Upon termination of this Agreement: (i) all Fees due from Licensee
as of the date of termination shall be immediately paid in full;
(ii) Licensee shall destroy all advertising or promotional
materials, if any, containing any reference to Licensor or the
Licensed Marks; and (iii) except as set forth in Section 3.4(b)
below, Licensee shall cease all use of the Licensed Marks and/or any
confusingly similar marks or names.
(b) Notwithstanding any other provision of this Agreement, for a period
not to exceed 90 days following the termination of this Agreement
other than for termination for breach which has not been cured,
Licensee shall be permitted to sell any products bearing the
Licensed Marks then in its inventory and to fulfill the terms of
customer agreements entered into prior to the effective date of such
termination, provided Licensee shall pay Licensor its Fees for any
inventory sold (without major discounts for distressed inventory).
4. Warranty; Disclaimers and Limitations of Warranties and Liability;
Indemnification. 4.1 Warranty. Licensor warrants that the Licensed Marks
will not infringe the trademark, of any third party in the country or
countries in which the Licensed Marks are the subject of a trademark
registration as set forth in Exhibit A hereto. In case of a breach of the
warranty set forth in this Section 4.1, Licensor shall, as its sole
obligation to Licensee (other than the indemnification obligations set
forth in Section 4.5): (a) procure for Licensee the right to continue to
use without registration the affected Licensed Marks or (b) if Licensor is
unable to do so, on a commercially reasonable basis, in its sole
discretion, terminate the License with respect to the Licensed Marks in
the affected country or countries.
4.2 Disclaimer of Warranties.
EXCEPT AS EXPRESSLY SET FORTH IN THIS AGREEMENT, (A) THE LICENSED MARKS
ARE PROVIDED AS IS AND AS AVAILABLE AND (B) TO THE MAXIMUM EXTENT
PERMITTED BY APPLICABLE LAW, LICENSOR DISCLAIMS ANY AND ALL WARRANTIES,
WRITTEN OR ORAL, EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO THE
IMPLIED WARRANTIES OF TITLE, NON-INFRINGEMENT, MERCHANTABILITY, AND
FITNESS FOR A PARTICULAR PURPOSE, WITH RESPECT TO THE LICENSED MARKS.
4.3 Exclusion of Liability.
EXCEPT FOR EACH PARTY'S OBLIGATIONS PURSUANT TO THE
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INDEMNIFICATION PROVISIONS SET FORTH IN SECTION 4.5 TO REIMBURSE THE OTHER
PARTY FOR THIRD PARTY CLAIMS FOR INDIRECT, INCIDENTAL, CONSEQUENTIAL,
SPECIAL, PUNITIVE OR EXEMPLARY DAMAGES, TO THE MAXIMUM EXTENT PERMITTED BY
APPLICABLE LAW, NEITHER PARTY SHALL BE LIABLE TO THE OTHER FOR ANY
INDIRECT, INCIDENTAL, CONSEQUENTIAL, SPECIAL, PUNITIVE OR EXEMPLARY
DAMAGES ARISING OUT OF OR RELATED TO THIS AGREEMENT, HOWEVER CAUSED AND ON
ANY THEORY OF LIABILITY INCLUDING NEGLIGENCE, AND EVEN IF SUCH PARTY HAS
BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
4.4 Limitation of Liability.
EXCEPT WITH RESPECT TO ITS OBLIGATIONS PURSUANT TO THE INDEMNIFICATION
PROVISIONS SET FORTH IN SECTION 4.5, EACH PARTY'S AGGREGATE LIABILITY FOR
ALL CLAIMS ARISING OUT OF OR RELATED TO THIS AGREEMENT SHALL NOT EXCEED
THE FEES ACTUALLY PAID TO LICENSOR UNDER THIS AGREEMENT.
4.5 Indemnification Obligations.
Each party shall indemnify, defend and hold the other party and its
stockholders, directors, employees and agents harmless from and against
all damages and expenses of any kind (including reasonable attorneys'
fees) ("Damages") incurred for third party claims arising out of or in
connection with infringement by the indemnifying party of third party
intellectual property rights relating to use of the Licensed Marks in the
Licensed Territory where they are the subject of a trademark registration
as set forth in Exhibit A hereto, except in each case to the extent that
any such damages arise out of any action by any indemnified party.
In addition to the foregoing, Licensee shall indemnify, defend and hold
Licensor its parent, subsidiaries and related companies, and the officers,
directors, employees, workmen, agents, servants, and invitees harmless
from and against all Damages incurred from third party claims arising out
of or in connection with (i) bodily injury including death at any time
resulting therefrom and (ii) damages to all property including loss of use
thereof and downtime, which either directly or indirectly, result from or
occur in connection with the sale of products bearing the Licensed Marks
in the Licensed Territory including product liability or breach of this
Agreement or any warranty herein.
5. Intellectual Property
5.1 Ownership. Licensee acknowledges that, as between Licensee and Licensor,
Licensor owns all right, title and interest in all intellectual property
with respect to the Licensed Marks. Licensee understands and agrees that
its use of or access to any of the Licensed Marks in connection with this
Agreement shall not create in it any right, title or interest, in or to
such property, and that all such use or access and goodwill associated
with any such use or access will inure to the benefit of and be on behalf
of Licensor.
5.2 Prosecution of Infringement. Licensor shall have the sole right, in its
discretion, under its own control and at its own expense, to use
commercially reasonable efforts to prosecute any third party infringement
of the Licensed Marks in the Licensed Territory. Each party shall inform
the other in writing promptly upon becoming aware of any alleged
infringement of the Licensed Marks in the Licensed Territory, setting
forth in reasonable detail the nature of such alleged infringement and any
evidence of such alleged infringement. If within sixty (60) days after
having been notified or becoming aware of
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any alleged infringement, Licensor has refused to take action to stop such
third party infringement, Licensee shall have the right, under its own
control and at its own expense, to prosecute such infringement, and
Licensee may, for such purpose, join Licensor as party plaintiff. Each
party agrees to provide such reasonable assistance requested by the other
party in any action under this Section 5.2. Any recovery of damages by a
party prosecuting infringement of the Licensed Marks in the Licensed
Territory shall be retained by the party bringing the action.
6. Confidentiality.
Each party understands and acknowledges that any proprietary or
confidential data or information, oral or written, relating to the other
party's research, development or business activities which is disclosed or
otherwise made available by the other party (collectively, "Confidential
Information") represents valuable confidential information entitled to
protection. Each party shall, with respect to the other party's
Confidential Information:
(a) keep confidential, not disclose and protect it from unauthorized
disclosure by its employees and agents, in each case for a period of
two (2) years from the date of disclosure, such Confidential
Information;
(b) secure and protect all copies of such Confidential Information
in its possession in a manner consistent with the steps taken to
protect its own trade secrets and Confidential Information, but not
less than a reasonable degree of care;
(c) limit access to such Confidential Information to its employees
who require such access in connection with this Agreement and take
appropriate steps to assure such employees comply with its
obligations hereunder; and
(d) not use such Confidential Information except for the purposes
expressly set forth in this Agreement.
7. Miscellaneous
7.1 Injunctive Relief. Licensee acknowledges and agrees that an impending or
existing violation of Sections 1.2 or 6 of this Agreement would cause
irreparable harm to Licensor, for which there is no adequate remedy at
law, and that Licensor shall be entitled to obtain immediate injunctive
relief prohibiting such violation, in addition to any and all other
remedies and rights available at law or equity.
7.2 Mutual Representations and Warranties. Each Party represents and warrants
that (a) it is duly organized, validly existing and in good standing under
the laws of the jurisdiction of its organization and has the necessary
power and authority to enter into and perform its obligations under this
Agreement, (b) this Agreement has been duly authorized, executed and
delivered by it and (c) its execution and delivery of this Agreement, and
the performance of its obligations hereunder, will not conflict with or
result in a violation, breach or default of any other agreement to'which
it is a party or by which it is bound.
7.3 Independent Contractor. Licensor and Licensee are and will remain
independent contractors. The Agreement does not constitute a partnership.
Neither party is a franchisee, agent or legal representative of the other
for any purpose, and neither party has the authority to act for, bind or
make commitments on behalf of the other.
7.4 No Assiqnment: Neither party may sell, transfer, assign, or subcontract
its rights or obligations under this Agreement without the express written
consent of the other party.
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7.5 Amendments. No amendment, modification, or waiver of any provision of this
Agreement will be effective unless set forth in a writing executed by each
party. No failure or delay by any party in exercising any right or remedy
hereunder will operate as a waiver of any such right or remedy.
7.6 Force Majeure. Neither party will be liable nor deemed to be in breach of
its obligations hereunder for any delay or failure in performance under
this Agreement or other interruption of service resulting, directly or
indirectly, from acts of God, civil or military authority, act of war,
accidents, electronic, computer or communications failures, natural
disasters or catastrophes, strikes, or other work stoppages or any other
cause beyond the reasonable control of the party affected thereby.
7.7 Notices. Any notice to be given under this Agreement will be in writing,
will be deemed given upon receipt, and will be delivered in person, by
registered or certified mail, postage prepaid, return receipt requested,
or by overnight delivery service with proof of delivery, and addressed as
follows:
To Licensee: To Licensor:
Xxxxxx X. X. Xxxxxxxx Xxxxxx Xxxxx-Xxxx
President President
Organic Sales and Marketing, Inc. Nevr-Dull, Inc
000 Xxxxxxxx 00 Xxxxx Xxxxxx
Xxxxxxx, Xxxxxxxxxxxxx 00000 Xxxxxxxx, Xxx Xxxx 00000
With a copy to:
Xxxxx X. Xxxxxxx
Xxxxxxx & Xxxxx
000 Xxxx 00xx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
7.8 Governing Law; Dispute Forum. This Agreement will be governed by and
construed in accordance with the laws of the State of New York. The
Federal and state courts of New York will have exclusive jurisdiction of
any dispute arising under this Agreement.
7.9 Entire Agreement; Severability. This Agreement, together with the
schedules, amendments, and other attachments, contains a full and complete
expression of the rights and obligations of the parties and supersedes any
and all other previous agreements, written or oral, made by the parties
concerning its subject matter. If any provision of this Agreement is held
by a court or arbitration panel of competent jurisdiction to be unlawful,
the remaining provisions of this Agreement will remain in full force and
effect to the extent that the parties' intent can be lawfully enforced.
7.10 Headings. The headings herein have been included solely for reference and
are to have no force or effect in interpreting the provisions of the
Agreement. 7.11 Survival. Sections 3.4, 4, 5 and 6 will survive any
termination of this Agreement. IN WITNESS WHEREOF, duly authorized
representatives of the parties have executed this Agreement under seal as
of and effective the date first written above:
Nevr-Dull, Inc. Organic Sales and Marketing, Inc.
By: Signature on file By: Signature on file
Name: Xxxxxx Xxxxx-Xxxx Name: Xxxxxx F:X. Xxxxxxxx
Title: President Title: President
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EXHIBIT A: LICENSED Marks
'Nevr-Dull' and all variation and combinations thereof
The following registered United States trademarks:
Registration No. Xxxx
2079169 NEVR-DULL THE ORIGINAL MAGIC WADDING POLISH
AUTOMOTIVE TRIM SILVERWARE COOKWARE BRASSWARE
MARINE HARDWARE
0699630 NEVR-DULL
0532980 NEVR-DULL
